e University of Cincinnati Intellectual Property and Computer Law Journal Volume 1 | Issue 1 Article 4 2016 Celebrities’ Expansive “Right of Publicity” Infringes upon Advertisers’ First Amendment Rights Jon Siderits Student and Editor-in-Chief for IPCLJ (2015-2016), University of Cincinnati College of Law, [email protected]Follow this and additional works at: hp://scholarship.law.uc.edu/ipclj Part of the Advertising and Promotion Management Commons , Commercial Law Commons , First Amendment Commons , Intellectual Property Law Commons , Internet Law Commons , Marketing Law Commons , and the Social Media Commons is Article is brought to you for free and open access by University of Cincinnati College of Law Scholarship and Publications. It has been accepted for inclusion in e University of Cincinnati Intellectual Property and Computer Law Journal by an authorized administrator of University of Cincinnati College of Law Scholarship and Publications. For more information, please contact [email protected]. Recommended Citation Jon Siderits, Celebrities’ Expansive “Right of Publicity” Ininges upon Advertisers’ First Amendment Rights, 1 U. Cin. Intell. Prop. & Computer L.J. (2016) Available at: hp://scholarship.law.uc.edu/ipclj/vol1/iss1/4
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The University of Cincinnati Intellectual Property andComputer Law Journal
Volume 1 | Issue 1 Article 4
2016
Celebrities’ Expansive “Right of Publicity” Infringesupon Advertisers’ First Amendment RightsJon SideritsStudent and Editor-in-Chief for IPCLJ (2015-2016), University of Cincinnati College of Law, [email protected]
Follow this and additional works at: http://scholarship.law.uc.edu/ipclj
Part of the Advertising and Promotion Management Commons, Commercial Law Commons,First Amendment Commons, Intellectual Property Law Commons, Internet Law Commons,Marketing Law Commons, and the Social Media Commons
This Article is brought to you for free and open access by University of Cincinnati College of Law Scholarship and Publications. It has been accepted forinclusion in The University of Cincinnati Intellectual Property and Computer Law Journal by an authorized administrator of University of CincinnatiCollege of Law Scholarship and Publications. For more information, please contact [email protected].
Recommended CitationJon Siderits, Celebrities’ Expansive “Right of Publicity” Infringes upon Advertisers’ First Amendment Rights, 1 U. Cin. Intell. Prop. &Computer L.J. (2016)Available at: http://scholarship.law.uc.edu/ipclj/vol1/iss1/4
responded in a manner that Duane Reade likely did not expect—she sued the company for,
among other things, violating her right of publicity under New York state law, seeking damages
of no less than $6 million.3
In her complaint, Heigl expressed her strenuous objection to Duane Reade “exploit[ing]
[her] image for commercial gain,” claiming that she had suffered “substantial” harm.4 In
particular, Heigl asserted that her “picture, image, and likeness enjoy wide-spread recognition
and monetary value” by virtue of her celebrity status, and that she has carefully protected her
name and persona from unauthorized exploitation by advertisers.5 As she puts it, “when [she]
chooses to endorse a product or service, she is highly selective and well compensated.”6 Duane
1 Emily Yahr, Can Katherine Heigl really sue Duane Reade for tweeting her photo? Yes, and here’s why., The
Washington Post (Apr. 11, 2014), http://www.washingtonpost.com/blogs/style-blog/wp/2014/04/11/can-katherine-
heigl-really-sue-duane-reade-for-tweeting-her-photo-yes-and-heres-why/. 2 Id. 3 Id. 4 Heigl v. Duane Reade, Inc., No. 1:14-cv-02502 (S.D.N.Y. 2014), ECF No. 2, Complaint at 1. 5 Id. at 4. 6 Id. at 4.
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Siderits: Celebrities’ Expansive “Right of Publicity”
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Reade, however, had not sought or obtained her permission prior to publishing the photograph to
promote its stores.7
Although Heigl v. Duane Reade, Inc. was ultimately settled out of court in August 2014,
with Duane Reade allegedly making a sizable contribution to Heigl’s charity foundation, the case
illustrates the expansive nature of celebrities’ so-called “right of publicity” and its impact on the
First Amendment rights of advertisers, as well as its effect on the general public.8 The right of
publicity should not be a viable cause of action against an advertiser who uses a celebrity's name
or likeness, or otherwise appropriates the celebrity’s identity to promote a product, so long as the
advertiser does not falsely imply that the celebrity approves of, or endorses, the product.
II. Background
A. Regulation of Commercial Speech
In 1976, the Supreme Court in Virginia State Board of Pharmacy v. Virginia Citizens
Consumer Council criticized the paternalistic, overprotective nature of the commercial speech
doctrine.9 Prior to Virginia State Board, the commercial speech doctrine had allowed practically
unbridled legislative regulation of commercial speech, which was viewed as having little value
with little or no recognition of any First Amendment protection, since the days of Valentine v.
Chrestensen.10 But now, the Supreme Court has recognized that different people value different
speech differently, and that consumers and society in general have a strong interest in the “free
7 Id. at 10. 8 Nate Raymond, Katherine Heigl, Duane Reade end lawsuit over actress' photo, Reuters (Aug. 27, 2014),
http://www.reuters.com/article/2014/08/27/us-people-katherineheigl-idUSKBN0GR2BD20140827. 9 Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc., 425 U.S. 748, 770 (1976). 10 See e.g., Valentine v. Chrestensen, 316 U.S. 52, 54 (1942) (holding that, while states and municipalities may not
unduly burden or proscribe the freedom to communicate information in public thoroughfares, “the Constitution
imposes no such restraint on government as respects purely commercial advertising”).
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flow of commercial information.”11 And, as Justice Blackmun stated in the majority opinion, the
right to free speech is just as much about the “listener” as it is about the “speaker.”12
Following Virginia State Board, in 1980 the Supreme Court decided the landmark
commercial speech case Central Hudson Gas & Electric Corp. v. New York, which established
the modern standard for government regulation of speech in the context of commercial
advertising. Finding that commercial speech was valuable as a means of providing information to
people to make informed decisions, the Court established a four-step analysis which asks: (1) is
the expression protected by the First Amendment (i.e. concerning lawful activity and not
misleading); (2) is the asserted governmental interest substantial; (3) does the regulation directly
advance the asserted governmental interest; and (4) is the regulation more extensive than
necessary to serve that interest?13 Essentially, a state can only regulate lawful commercial speech
if it has a substantial interest for doing so and the regulation directly advances that interest in a
manner no more extensive than necessary.14 In a concurring opinion, Justice Blackmun disagreed
with the last three prongs of the Court’s new test, and instead believed the first prong to be
dispositive; in his view, so long as the speech was lawful and not misleading, then the
government’s only recourse might be to regulate the advertised product or service itself—not the
commercial speech associated therewith.15
11 Virginia State Bd., 425 U.S. at 763-764. 12 Id. at 757. 13 Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of New York, 447 U.S. 557, 564 (1980). 14 Id. 15 See id. at 579.
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B. Haelan Laboratories
The right of publicity was first recognized by the Second Circuit in Haelan Laboratories,
Inc. v. Topps Chewing Gum, Inc. In Haelan, the court decided that “a man has a right in the
publicity value of his photograph, i.e., the right to grant the exclusive privilege of publishing his
picture.”16 According to the Haelan court, this “right of publicity” must be separate from the
statute-created right of privacy, wherein one has “a personal and non-assignable right not to have
his feelings hurt” by a publication of his own picture, because, as the court reasoned, celebrities
would otherwise “feel sorely deprived if they no longer received money for authorizing
advertisements.”17 Indeed, the Haelan court recognized that this sense of deprivation would be
“far from” any sense of bruised feelings on the part of the celebrity.18 In essence, the Haelan
court recognized that there is pecuniary value in a person’s (and, in particular, a celebrity’s)
endorsement of a product or service, and therefore created a new, common-law, intellectual
property right for courts to protect that value. Notably, the emersion of the right of publicity
occurred during the reign of the commercial speech doctrine, prior to the Supreme Court’s
decision in Virginia State Board or its creation of the Central Hudson test.
C. Celebrity Impersonators
In the half-century since Haelan, the right of publicity has been recognized in the
majority of states across the country, either by way of common law or codification in state
statute.19 Moreover, the right has undergone significant expansion in the advertising context,
16 Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866, 868 (2d Cir. 1953). 17 Id. 18 Id. 19 Notably, national advertisers must adhere to the strictest of the state laws in which they advertise, such that
recognition of the right of publicity in the majority of states has the practical result of affecting advertisers’
decisions even in states where the right is not recognized.
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reaching far beyond the use of a celebrity’s picture. For example, in Onassis v. Christian Dior-
New York, Inc., the court found that the New York right of publicity statute, which prohibited
unauthorized appropriation of a person’s “portrait or picture” for advertising purposes, was
violated by use of a celebrity “look-alike.”20 In Onassis, an advertiser sought to prepare a
number of print ads featuring the famous Jacqueline Kennedy Onassis, but knew that she would
likely refuse to appear because she was historically known to never allow her name or image to
be used to promote commercial products; the advertiser’s solution was to fill her role in the ad
with the help of Barbara Reynolds, a celebrity impersonator of Onassis.21 The court ruled against
the advertiser, holding that the statutory language “portrait or picture” extended beyond actual
images of Onassis herself to include “any representation, including the picture of another, which
was intended to be, and did, in fact, convey the idea that it was the plaintiff.”22 The court
concluded that Reynolds may not use her resemblance to Onassis in commercial advertisements,
adding that “[n]o one has an inherent or constitutional right to pass himself off for what he is
not.”23
Shortly after the New York Supreme Court’s decision in Onassis, the Southern District of
New York decided a similar case involving another celebrity look-alike. In Allen v. National
Video, Inc., the court clarified that, in analyzing a right of publicity claim against the use of a
celebrity look-alike, “the question before the court is not whether some, or even most, people
will be reminded of plaintiff when they see this advertisement . . . but whether an undisputed
picture of [the look-alike] should be regarded, as a matter of law, to be a portrait or picture of
20 Onassis v. Christian Dior-New York, Inc., 472 N.Y.S.2d 254, 257-258, 263 (Sup. Ct. 1984) aff'd, 488 N.Y.S.2d
943 (App. Div. 1985). 21 Id. at 257. 22 Id. at 261. 23 Id. at 262.
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plaintiff.”24 While it found that the advertisement at issue, which included a photograph of
Woody Allen look-alike Phil Boroff, certainly made reference to the celebrity plaintiff, the court
identified several factors that weighed against granting summary judgment in his favor.25 These
factors included several differing physical characteristics and alternative interpretations for the
look-alike’s presence in the advertisement, and so the court declined to conclude that the
photograph used in the advertisement was the celebrity’s portrait or picture as a matter of law.26
Therefore, the court resolved the issue in the context of a Lanham Act false endorsement claim
instead, ultimately finding in favor of the celebrity plaintiff and granting an injunction against
the defendant advertiser.27
Similarly, in Midler v. Ford Motor Co., an advertising agency sought out Grammy
Award winner Bette Midler to sing her hit “Do You Want To Dance” for a television commercial
promoting the Ford Lincoln Mercury.28 When Midler’s manager refused, the agency found a
replacement in Ula Hedwig, a former Midler backup singer.29 After being instructed by the
agency to record the song “sound[ing] as much as possible like…Bette Midler,” Hedwig imitated
Midler as best she could.30 Ultimately, the Hedwig recording was used in the commercial, and
many viewers believed that it “sounded exactly” like Midler’s distinctive recording.31 Even
though the court found that the agency had not used Midler’s name, voice, likeness, or any other
use prohibited by state statute, the court looked to the common law, wherein the state would
24 Allen v. National Video, Inc., 610 F. Supp. 612, 624 (S.D.N.Y. 1985) (emphases in original). 25 Id. 26 Id. 27 Id. at 630. 28 Midler v. Ford Motor Co., 849 F.2d 460, 461 (9th Cir. 1988). 29 Id. 30 Id. 31 Id. at 462.
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recognize an injury from “an appropriation of the attributes of one’s identity.”32 The court found
that using Hedwig as a Midler “sound-alike” constituted such an appropriation, stating that “[t]o
impersonate her voice is to pirate her identity.”33
D. Right of Publicity vs. First Amendment
Celebrities’ right of publicity has occasionally been trumped by the First Amendment.
For example, in C.B.C. Distrib. & Mktg. v. Major League Baseball Advanced Media, L.P., the
court recognized “an inherent tension between the right of publicity and the right of freedom of
expression under the First Amendment.”34 The C.B.C. court balanced the competing interests at
issue in a non-advertising setting: a fantasy sports game producer’s First Amendment right to use
baseball players’ names and playing records versus the baseball players’ right of publicity.35 In
conducting its analysis, the court identified each of the potential justifications for enforcing the
right of publicity. First, the court noted that, in Zacchini v. Scripps, the Supreme Court had found
that at least one goal of the right is to “focus [] on the right of the individual to reap the reward of
his endeavors,” distinguishing between those cases in which a person’s name is used “for
purposes of trade” and those which “go[] to the heart of [a person’s] ability to earn a living” and
which involve “the very activity by which the entertainer acquired his reputation in the first
place.”36 The C.B.C. court found that the game producer’s use of the players’ names and playing
32 Id. at 463. 33 Id. 34 C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced Media, L.P., 443 F. Supp. 2d 1077, 1095
(E.D. Mo. 2006) aff'd, 505 F.3d 818 (8th Cir. 2007). 35 Id. 36 Id. at 1097 (quoting Zacchini v. Scripps–Howard Broadcasting, Co., 433 U.S. 562, 573 (1977)).
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records did not interfere with their ability to reap financial rewards from playing baseball and
making product endorsements.37
Next, the C.B.C. court analyzed the potential economic incentive for enforcing the
players’ right of publicity. Quoting Cardtoons, L.C. v. Major League Baseball Players' Ass'n38,
the court found that the economic incentive of inducing achievement was “inconsequential
because most celebrities with valuable commercial identities are already handsomely
compensated . . . even without the right of publicity the rate of return to stardom in the
entertainment and sports fields is probably high enough to bring forth a more than adequate
supply of creative effort and achievement.”39 Moreover, the court noted that “even in the absence
of publicity rights, celebrities would still be able to reap financial reward from authorized
appearances and endorsements.”40 While the C.B.C. court clearly was not moved by this
economic incentive, it noted that another economic incentive of promoting efficient allocation of
resources might be more persuasive in an advertising context, “where repeated use of a
celebrity’s likeness to sell products may eventually diminish its commercial value.”41
The C.B.C. court also identified protection against consumer deception as a justification
for the right of publicity, but noted that the Lanham Act already provides such protection.42
Other possible justifications cited by the court included allowing the persons to enjoy the fruits
of their goodwill and the prevention of unjust enrichment.43 Notably, the court found that the
public’s countervailing “interest in the dissemination of news and information” outweighed any